Below is an excerpt from John McKeown's April 2016
Monthly IP Bulletin.
I would like to continue the discussion concerning developing
effective brand management policies. This month I would like to
discuss policing the marketplace.
Policing the Marketplace
A mark may acquire distinctiveness through extensive use in the
marketplace which shows that the mark is known to purchasers of the
wares or services in issue. The proper management of brand
expression can result is increased distinctiveness. However,
distinctiveness may be reduced if other competitors are using
trademarks or trade names similar to the brand owner's brand
The key to managing distinctiveness is obtaining the relevant
marketplace information and then taking appropriate steps. One
simple method of doing this is by monitoring the Trademarks
Journal, either directly or through the use of a watch service.
In Canada, trademark applications which have been approved by
the Registrar of Trademarks are advertised in the Trademarks
Journal. The Journal includes a reproduction of the application
including a representation of the trademark in issue. Within two
months of the advertisement of the application anyone may, on
payment of a prescribed fee, file a statement of opposition.
It is important to review the Trademarks Journal since a brand
owner's assessment as to whether a trademark is confusing with
its registered trademark, may vary substantially from the
determination of the examiner at the Trademarks Office.
Also, where the Trademarks examiner is in doubt whether a
claimed trademark is registrable by reason of a pre-existing
registered trademark, the examiner may approve the application and,
by registered letter, notify the owner of the registered trademark
of the advertisement of the application. There has been a
significant increase in the number of these letters. Such letters
should be carefully considered by a brand owner.
In many cases it may be useful to seek an extension of the time
in which to file a statement of opposition so that discussions may
take place with the applicant or its representatives concerning
whether the application should be withdrawn or some other
settlement arrived at. If this is not possible an opposition can be
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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